In Lucasfilm Ltd v Ainsworth [2009] EWCA Civ 1328, the Court of Appeal of England and Wales ruled that claims under U.S. copyright law cannot be determined by an English court, thereby reversing a decision of the High Court. The Court of Appeal agreed with the trial judge that the items in question were not sculptures for the purposes of the Copyright Designs and Patents Act 1988 (CDPA).

BACKGROUND

In 1976 the Claimants, Lucasfilm, commissioned Andrew Ainsworth to make helmets and armour to be worn by the stormtrooper characters in the first Star Wars film. Lucasfilm provided Mr Ainsworth with two drawings and a clay model of a prototype helmet. Mr Ainsworth then made his own moulds, incorporating refinements to the facial elements shown in the drawings and prototypes.

In 2004, Mr Ainsworth set up a website selling helmets and armour made from those moulds. Lucasfilm brought proceedings against Mr Ainsworth in California, alleging copyright and trade mark infringement. Lucasfilm obtained default judgment for a total of U.S.$20 million, which included U.S.$10 million compensatory damages.

ENGLISH PROCEEDINGS

Lucasfilm then brought a claim in the High Court on a number of bases, including copyright infringement under UK law, enforcement of the compensatory element of the U.S. judgment and, to the extent that the High Court refused to enforce that judgment, determination of its claims under U.S. copyright law. Mr Ainsworth contended that the clay model he was given was not a copyright work, on the basis that it was not a “sculpture”, and further that he had two separate defences under Sections 51 and 52 Copyright, Designs and Patents Act 1988 (CPDA) to the allegation of infringement of copyright in the drawings.

Section 51 provides that making an article to a design does not amount to infringement of the copyright in the design documents or models embodying that design, if that article is not an artistic work. Secondly, under Section 52, where the owner of copyright in an artistic work has marketed copies of that work made under an industrial process, the duration of copyright protection in that work is shortened from the usual term of 70 years after the death of the author, in this case to either 15 or 25 years, depending on whether the transitional provisions to the CDPA applied.

FIRST INSTANCE

Mr Justice Mann rejected all of Lucasfilm’s copyright infringement claims under UK law. He held that the models for the helmets did not have an independent copyright as being “sculptures” or “works of artistic craftsmanship” and that Mr Ainsworth had defences under both Sections 51 and 52 of the CDPA. He upheld Lucasfilm’s claim to enforce U.S. copyright, granting an injunction restraining Mr Ainsworth from selling or marketing his helmets in the United States.

Lucasfilm appealed the findings that the prototypes were not “sculptures”, and that Mr Ainsworth had defences under Sections 51 and 52 CDPA. Mr Ainsworth cross-appealed the decision to enforce the U.S. copyright.

COURT OF APPEAL DECISION

The Court of Appeal agreed that there was no copyright in the helmets as sculptures. In the view of the Court, the issue was not the purpose of what an object is actually used for, but depended on the purposive nature of the object. The Court of Appeal also agreed that Mr Ainsworth had defences under both Sections 51 and 52 CDPA.

The Court of Appeal disagreed with Mann J on the question of enforceability of U.S. copyright in the English courts. It concluded that for sound policy reasons, international jurisdiction over copyright infringement claims does not exist.

COMMENT

The Court of Appeal pointed out that, were the High Court judgment to stand, it could lead to problems of forum shopping and several disputes running concurrently in different jurisdictions, with no clear indication as to whether the cases should proceed in parallel, or whether one or more should proceed at the expense of others.

The distinction drawn by the trial judge between any artistic merit of an object and the nature of its intended use (which was endorsed by the Court of Appeal) is also a useful clarification of the law, although it will not always be straightforward to apply. The Court of Appeal did not attempt to devise a comprehensive or exclusive definition of “sculpture” sufficient to determine the issue in any given case, which seems prudent in the light of what is recognised in the judgment as the ”heavily subjective realms of definition in the artistic field”.